In Cephalon, Inc. v. Sandoz Inc., C.A. No. 10-123-SLR (D. Del. May 5, 2011), an ANDA case, Cephalon filed a motion to stay pending its appeal of related litigation. In the related case, involving the same patents, the court found that the defendant did not infringe and that the patents were invalid. Id. at 2. Judge Robinson determined that a stay was appropriate because, among other things, Sandoz’s 30-month stay was set to expire in July 2012, which would likely occur after the Federal Circuit disposed of the appeal. Id. at 4. “If the Federal Circuit affirms the court’s invalidity holding, there is no reason for trial and the expenses related thereto.” Id. Judge Robinson found that Sandoz would not be prejudiced because, among other things, it could not enter the marketplace prior to July 2012. Id.

In Oracle Corp. v. Parallel Networks, LLC, C.A. No. 06-414-SLR (D. Del. Apr. 29, 2011), Judge Robinson recently issued an amended memorandum order denying both parties’ motions for summary judgment. After finding that several genuine issues of material fact compelled the denial of Parallel’s motion for partial summary judgment of literal infringement, the court found that “Parallel has proffered sufficient circumstantial and direct evidence [of direct infringement by Oracle customers] to withstand summary judgment as to . . . the issue of induced infringement.” Id. at 28-29. This evidence included a presentation at an Oracle conference and a best practices document, both of which allegedly instructed Oracle customers “‘how to use the Accused Oracle Products in an infringing manner'” and “‘freely and openly strongly encourage[d] them to do so.'” Id. Judge Robinson further denied Oracle’s motion as to contributory infringement, rejecting Oracle’s argument that it had adequately demonstrated “that each of its accused products have significant noninfringing uses[.]” Id. In denying Oracle’s motion, Judge Robinson stated that “[a] reasonable jury could find that the accused products do not meet the definition of a staple article of commerce.” Id. at 29.

Judge Robinson noted that the clinical trial data “may be relevant under the entire market value rule,” and that excluding the data would “parse the actual story of this dispute with too broad a stroke.” Id. at 1. Judge Robinson also limited Dr. Rogers’s testimony regarding the clinical trial data “based upon the determination of the clinical trial data’s relevance[.]” Id. at 2.

How did this happen? Apparently, ACS simply ran out of money to pay its counsel. According to its counsel (during a conference on its counsel’s motion to withdraw), “ACS lacked funds to pay [its counsel], had no cash flow, and . . . shut down its business in Bogata, Columbia.”

ACS had apparently filed an answer, but no expert report on non-infringement, and failed to meet its obligations under the scheduling order to “cooperate with Hesco in connection with required pretrial activities.” On April 16, 2010, ACS’s counsel filed their motion to withdraw due to a failure to receive payment, which was granted, and ACS was unable to obtain substitute counsel. On May 10, 2010, Hesco filed a motion for default.

On January 5, 2011, the Court issued an order to show cause; ACS replied that it lacked the funds to hire substitute counsel. On Feb. 28th the clerk entered default, and on March 30, 2011, the Court held a hearing on the motion for default judgment. Finally, on April 14th, 2011, the Court granted Hesco’s motion for default, and awarded the permanent injunction and damages.

The plaintiffs held patents covering orally-disintegrating clozapine tablets in certain dosages. In July 2010, the plaintiffs initiated this Hatch-Waxman patent infringement action against the defendants after the defendants filed an ANDA seeking approval to market a generic orally-disintegrating clozapine product. Id. at 1-2.

Judge Stark noted that “[w]hether or not to stay litigation pending reexamination by the PTO of the patents-in-suit is a matter left to the Court’s discretion” and typically requires an evaluation of three factors: “(1) whether a stay will simplify the issues and trial of the case, (2) whether discovery is complete and a trial date has been set, and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party.” Id. at 4.

Applying these factors, Judge Stark found that (1) a stay would simplify the issues and trial of the case because, inter alia, all disputed claims “currently stand rejected in the reexaminations[,]” id. at 5-6, (2) no discovery had taken place and no “milestone dates” had been set (“the instant lawsuit is in its infancy”), id. at 6-7, and (3) “a stay would impose no undue prejudice to Mylan sufficient to outweigh the other considerations[,]” id. at 7. On balance, the court found that these factors “tip the interests against proceeding at this time with this litigation.” Id. at 7-8.

Judge Stark recently decided defendant Nikon Americas, Inc.’s motion to dismiss for failure to state a claim. Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., C.A. No. 10-63-LPS (D. Del. Apr. 21, 2011). Nikon Americas’ motion was premised on the fact that because Nikon Americas was a holding company, it could not infringe the patent-in-suit. Id. at 1. Specifically, Nikon Americas’ argued that because it does not “make, use, offer to sell, sell, or import into the United States the allegedly infringing products or, in fact, any products whatsoever[,]” it cannot be found to infringe the patent-in-suit. Id. at 3 (internal quotations omitted). Judge Stark found that plaintiff had alleged facts sufficient to survive Nikon Americas’ motion to dismiss and that Nikon Americas’ “general denial” of infringement “does not provide a basis to dismiss this case.” Id. at 4. “Accepting [plaintiff’s] well-pleaded allegations as true, this Court finds that it is at least plausible to believe that [Nikon Americas] infringes the [patent-in-suit].” Id. at 5.

In Boston Scientific Corp. v. Cordis Corp., C.A. No. 10-315-SLR (D. Del. Apr. 13, 2011), a patent infringement case dealing with cardiovascular stents, Judge Robinson recently decided several motions and granted partial summary judgment sua sponte on the date of hypothetical negotiation. Judge Robinson denied the defendant’s motion to stay the trial on damages and willfulness pending reexamination, finding that all of the Dentsply factors weighed against staying the litigation: (1) discovery is complete and trial is imminent, (2) “[a] final determination by the PTO could take years,” (3) the request for reexamination was filed “several years after the end of the jury trial” establishing liability, (4) the motion to stay was not filed until almost a year after the request for reexamination, (5) the reexamination proceedings are still in their early stages, and (6) the parties involved are direct competitors. Id. at 7-10. The court then granted the plaintiffs’ motion for summary judgment of infringement, finding that the accused stent “has the same stent architecture as the [other] stents that were found to infringe” in an earlier trial. Id. at 10-12. Finally, before deciding two Daubert motions related to expert opinions on royalties, Judge Robinson granted summary judgment sua sponte on the date of hypothetical negotiation. Id. at 15, 18. The court found that although the defendant marketed infringing cardiovascular stents in 1999, the new “stent is distinct from the [architecturally equivalent] stents previously marketed by Cordis.” Id. at 12-14. Thus, the marketing of the new stent “constituted a separate act of infringement” and the date of hypothetical negotiation was September 2009, the date when the new stent was first sold in the United States. Id. at 14-15.

In Xpoint Technologies, Inc. v. Toshiba Corp., et al., C.A. 09-628-SLR (D. Del. Apr. 8, 2011), Special Master Bechtle recently order plaintiff to supplement its infringement contentions, following the well-settled practice in this District that a plaintiff must specifically identify what products are accused in response to a properly served contention interrogatory. Plaintiff had previously refused to update its claim charts because it needed time to analyze recent discovery and confer with its experts. Id. at 3. Special Master Bechtle noted that “Toshiba is entitled to know what Toshiba products are contended by Xpoint to be infringement of Xpoint’s patents.” Id. If Xpoint has already specifically identified which Toshiba products are at issue in the litigation, “it should say so[, and if] it has not made those contentions yet, it should, and it should do so now.” Id. at 4. Special Master Bechtle also found that while plaintiff had an obligation to respond to Toshiba’s contention interrogatory with what products infringe and what claims and claim elements are infringed, plaintiff’s precise theory of infringement is “left to another day when the plaintiff includes in it’s expert reports and exert discovery the reasons, opinions and theories whey the identified productions and components of the defendant infringe on the patent or patents of the plaintiff.” Id. at 5.

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